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The GoPro trade mark dispute. Not just for couch potatoes.

GoPro cameras are typically used by energetic types such as snowboarders, kite surfers, and mountain bikers to record footage of their tireless adventures. The brand has nothing to do with food. Or does it?

In February 2013, Ross Walmsley filed an Australian trade mark application consisting of the words “GoPro” and a “G” logo. The application covered a very wide range of food products, ranging from the confronting “algae prepared for human foods” through to the somewhat less healthy “snack foods consisting principally of confectionary”.

A Notice of Intention to Oppose the registration was filed in July 30, 2013 by Woodman Labs Inc, who are now known as GoPro, Inc. This US company is the manufacturer of GoPro-branded action cameras, and is the owner of an Australian trade mark for, amongst other things, wireless digital video cameras. The hearing was held on 28 May 2015 and the decision was handed down on 24 September 2015.

GoPro relied mostly relied on the argument that the “GoPro” brand had acquired a reputation in Australia prior to the registration, and that this reputation could cause confusion or be likely to deceive consumers.

In support of the opposition, GoPro presented details of the company’s history, use of the trade marks in Australia, as well as the amount of sales and promotions of the products bearing the brand in Australia. The hearing officer noted, “The Opponent’s evidence establishes that the Opponent’ trade mark has a very substantial reputation in the adventure and sports photography market in which it inhabits. Indeed, it is probable that GOPRO is almost the default term for video cameras worn on the person or mounted on vehicles and various items used in adventurous and sporting activities.”

While the hearing officer accepted that the GoPro trade mark had already established a substantial reputation in Australia, he was not convinced that there is a likelihood for confusion:

“Notwithstanding the shared ‘GOPRO’ element in the opposing trade marks, I consider that there a sufficient visual and aural differences in the marks (the Trade Mark could be pronounced GOPROG or GOPRO-GEE), combined with the very different markets and customers involved with the relevant goods such that deception and confusion are unlikely.

Additionally, there is no evidence before me of any actual confusion in the marketplace in relation to the origin of the Applicant’s and Opponents’ respective goods provided under the respective trade marks.

I am not satisfied that the Applicant’s use of the Trade Mark would be likely to deceive or cause confusion. The parties are likely to trade in quite different markets and the vastly different natures of the goods are such that it is unlikely that consumers would assume that the goods came from the same source.”

This was unfortunate. The very wide specification of the trade mark could easily encapsulate energy bars and other types of foods which buff extreme sports enthusiasts could quaff while defying death. The brand “Nike”, owned by the famous sports clothing manufacturer, was considered by the High Court of Australia to be reasonably considered by consumers as capable of extending into “sports fragrances” (Campomar Sociedad Limited v Nike International Limited [2000] 202 CLR 45 (9 March 2000)). In a similar vein have recently seen Mercedes Benz advertising men’s cologne. It seems very reasonable for consumers aware of the GoPro brand to be capable of forming a view that GoPro sports snacks or triathlete’s banana mulch is endorsed by, affiliated with, or associated with the GoPro camera business.

“GoPro” is a well-known mark and seems to have become one in a very rapid period of time, and this decision presents the company with difficulties in respect of any possibility of brand extension in Australia.

Compare jurisdictions: Merger Control

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